Federal Express Corporation v. Qualcomm Incorporated

N OTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
FEDERAL EXPRESS CORPORATION,
Appellant
v.
QUALCOMM INCORPORATED,
Appellee
JOHN A. SQUIRES, UNDER SECRETARY OF
COMMERCE FOR INTELLECTUAL PROPERTY
AND DIRECTOR OF THE UNITED STATES
PATENT AND TRADEMARK OFFICE,
Intervenor
______________________
2024-1237
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2022-
00586.
______________________
Decided: April 29, 2026
______________________
J EFFREY A. BERKOWITZ, Finnegan, Henderson,
Farabow, Garrett & Dunner, LLP, Reston, VA, argued for
appellant. Also represented by CHRISTOPHER B.
ANDERSON, L UKE HAMPTON MAC D ONALD, J OSEPH MICHAEL
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SCHAFFNER , D ANIEL C. T UCKER , MICHAEL VINCENT Y OUNG,
SR.
MARK T. G ARRETT , Norton Rose Fulbright US LLP,
Austin, TX, argued for appellee. Also represented by
STEPHANIE D EBROW , EAGLE H OWARD R OBINSON; J ONATHAN
S. F RANKLIN, Washington, DC; D ANIEL L EVENTHAL ,
RICHARD STEPHEN ZEMBEK, Houston, TX.
STEVEN A. MYERS , Appellate Staff, Civil Division,
United States Department of Justice, Washington, DC, for
intervenor. Also represented by BRIAN M. BOYNTON,
BRADLEY HINSHELWOOD; P ETER J. AYERS , MICHAEL S.
F ORMAN, AMY J. N ELSON, F ARHEENA YASMEEN RASHEED,
Office of the Solicitor, United States Patent and Trade-
mark Office, Alexandria, VA.
______________________
Before H UGHES , C UNNINGHAM , and STARK, Circuit Judges.
Opinion for the court filed by Circuit Judge STARK.
Opinion concurring-in-part and dissenting-in-part filed by
Circuit Judge C UNNINGHAM .
STARK, Circuit Judge.
Federal Express Corporation (“FedEx”) owns U.S. Pa-
tent No. 9,182,231 (the “’231 patent”), which covers a hier-
archical sensor network for monitoring packages
throughout the shipping process. In February 2022, Qual-
comm Incorporated (“Qualcomm”) petitioned for inter
partes review (“IPR”) of the ’231 patent, alleging that
claims 1-15 and 26-30 were unpatentable as obvious in
view of U.S. Patent No. 7,212,829 (“Lau”), alone or in com-
bination with U.S. Patent App. No. 2007/0002139 (“Ben-
son”). The Patent Trial and Appeal Board (“Board”)
instituted review and determined that Qualcomm had
proven that the challenged claims were unpatentable un-
der 35 U.S.C. § 103. On appeal, FedEx challenges the
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Board’s determination as to claims 9 and 23-26. FedEx
contends that the Board erred in construing the “short
range” and “unable to” limitations of claim 26; in failing to
address an argument FedEx raised regarding the non-ob-
viousness of claims 9 and 23-25; and in reaching an obvi-
ousness determination for claims 9 and 23-25 lacking
substantial evidence support.1 We agree with the Board’s
constructions but also conclude that the Board erred in not
addressing FedEx’s argument as to claims 9 and 23-25. We
affirm the Board’s final written decision as to claim 26 and
vacate and remand for further proceedings as to claims 9
and 23-25.
I
The ’231 patent is directed to a sensor network for mon-
itoring shipped packages. The claimed system generally
“involves a server that can communicate with a mobile
master node in one of the packages over a first communi-
cation path, which in turn can communicate over a second
communication path with ID nodes placed in other pack-
ages, while the ID nodes do not themselves communicate
directly with the server over the first communication path.”
J.A. 3. The sensor network is, thus, hierarchical, with ID
nodes placed on each package communicating with a mo-
bile master node, which, in turn, communicates with a
1 FedEx additionally argues that the Board erred by
failing to adjudicate whether Qualcomm was required, un-
der 35 U.S.C. § 312(a)(2), to name Roambee Corporation as
a real party in interest in its petition. FedEx pressed this
same argument in a related appeal, which has been re-
solved by separate opinion issued this same date. See Fed.
Express Corp. v. Qualcomm Inc., No. 2024-1236, __ F.4th
__ (Fed. Cir. Apr. 29, 2026). Accordingly, as in that case,
we reject the portions of FedEx’s appeal challenging the
Board’s real party in interest determination.
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server on behalf of the ID nodes that do not themselves
communicate with the server.
Independent claim 26 requires “a mobile master
node . . . being operative to communicate with a server over
a longer range communication path; [and] . . . a plurality of
ID nodes . . . being operative to communicate with the mo-
bile master node over a short range communication path
but unable to directly communicate with the server.” J.A.
386. Pertinent to this appeal, dependent claims 9 and 23-
25 require a “power management instruction causing the
mobile master node to alter at least one operation of the
mobile master node and the ID node to change power con-
sumption.” J.A. 385-86.
With respect to claim 26, the Board found that prior art
Benson disclosed the claimed “longer range” and “short
range” communication path limitations through its teach-
ings of, respectively, a satellite relay communication path
and a Wireless Local Area Network (“WLAN”) communica-
tion path. Benson addresses monitoring remote objects uti-
lizing a network consisting of “master data collection
unit[s],” remote sensors, and a server. J.A. 3009-10 ¶¶ 3,
6-12, 26. In Benson’s system, remote sensors communicate
with the master data collection units which, in turn, com-
municate with a server. The remote sensors in Benson’s
system may also communicate with the server directly, by-
passing the master data collection units.
In addition to the “short” and “longer range” communi-
cation paths, claim 26 further requires that the ID nodes
“be[] operative to communicate with the mobile master
node . . . but unable to directly communicate with the
server.” J.A. 386. The Board rejected FedEx’s contentions
that “unable to” means more than merely not (at present)
“operative to” and requires, instead, “a device that lacks
the physical capability to communicate directly with the
server.” J.A. 10 (internal quotation marks omitted). After
rejecting FedEx’s preferred construction, the Board
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declined to expressly construe “unable to.” Ultimately, the
Board concluded that Benson’s disclosure of “an embodi-
ment in which the remote sensor unit is ‘not communi-
cating with the central data collection server directly’”
disclosed claim 26’s requirement that the ID nodes be “un-
able to communicate with the server,” notwithstanding
Benson’s further disclosure of embodiments that could “in-
volve a remote sensor unit communicating with the central
data collection server directly.” J.A. 42-43.
In evaluating the patentability of claims 9 and 23-25,
which require a “power management instruction causing
the mobile master node to alter at least one operation of
the mobile master node and the ID node to change power
consumption,” the Board found that Benson disclosed two
distinct power management instructions – an activation re-
quest and a task assignment script – and that these teach-
ings satisfied the power management instruction
limitations of claims 9 and 23-25. J.A. 44-46.
FedEx timely appealed from the Board’s final written
decision. We have jurisdiction pursuant to 35 U.S.C.
§ 141(c) and 28 U.S.C. § 1295(a)(4)(A).
II
We review the Board’s claim constructions de novo. See
St. Jude Med., LLC v. Snyders Heart Valve LLC, 977 F.3d
1232, 1238 (Fed. Cir. 2020). When the intrinsic evidence
resolves the claim construction dispute, it is not necessary
to consider the extrinsic evidence or the Board’s subsidiary
factual findings about that evidence. See Microsoft Corp.
v. Proxyconn, Inc., 789 F.3d 1292, 1297 (Fed. Cir. 2015).
Where necessary to do so, we review the Board’s factual
findings for substantial evidence. See St. Jude Med.,
977 F.3d at 1238. “Substantial evidence review asks
whether a reasonable fact finder could have arrived at the
agency’s decision and requires examination of the record as
a whole, taking into account evidence that both justifies
and detracts from an agency’s decision.” Intelligent Bio-
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Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1366
(Fed. Cir. 2016) (internal quotation marks omitted).
The Administrative Procedure Act (“APA”) requires the
Board to consider all evidence and arguments raised before
it. See Provisur Techs., Inc. v. Weber, Inc., 50 F.4th 117,
123-24 (Fed. Cir. 2022). We review challenges to the
Board’s compliance with its APA obligations de novo. See
Sirona Dental Sys. GMBH v. Institut Straumann AG, 892
F.3d 1349, 1352 (Fed. Cir. 2018).
III
FedEx argues the Board erred by: (a) finding that Ben-
son’s WLAN communication path satisfies claim 26’s “short
range communication path” limitation, a determination
FedEx contends is based on an incorrect claim construc-
tion; (b) construing “not operative to” as meaning “unable
to;” (c) failing to address FedEx’s argument that a single
power management instruction must alter both an opera-
tion of the mobile master node and the ID node(s); and (d)
finding Benson’s activation request alters the power con-
sumption operation of the mobile master node. We con-
sider each issue in turn.
A
FedEx contends that the Board erred in construing
claim 26’s “short range communication path” as a relative
term, requiring only that it be “shorter” in duration than
the claim’s “longer range communication path.” In partic-
ular, FedEx faults the Board for interpreting “short range
communication” in a manner that permits this limitation
to be satisfied by Benson’s disclosure of a WLAN commu-
nication path. In FedEx’s view, “the ’231 specification ex-
plicitly describes WLAN as a medium-range
communication, distinguishing it from the claimed ‘short
range’ variety.” J.A. 39 (quoting J.A. 1056). It necessarily
follows, according to FedEx, that claim 26’s “short range
communication path” does not encompass WLAN. We
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disagree with FedEx and, instead, agree with the Board: a
“short range communication path” includes a communica-
tion path, including WLAN, “so long as the ‘longer range
communication path’ is, in fact, ‘longer.’” J.A. 41.
The claim language of claim 26 makes clear that “short
range communication path,” as used in the ’231 patent, is
characterized by its relationship to the “longer range com-
munication path” that claim 26 also requires. J.A. 386 at
418:48-50 (emphasis added). FedEx’s contention that the
patent uses “short,” “medium,” and “longer” range commu-
nication paths to describe rigid classes of communication
types, each of which FedEx suggests has some manner of
fixed boundary – such that, for example, a WLAN commu-
nication can only ever be “medium” – is incorrect. Im-
portantly, the claim limitations are “short” and “longer,”
not “short” and “long.” The claim’s use of the comparative
adjective “longer” – rather than the positive degree adjec-
tive “long” – establishes that the two paths are to be eval-
uated relative to each other, not by reference to external
fixed standards. A person of ordinary skill would, there-
fore, understand claim 26 as allowing a wide variety of
paths to potentially satisfy the “short” limitation, so long
as they are “shorter” than the required “longer” path.
That this is so is further evidenced by the specification,
which does not treat “short,” “medium,” and “longer” in the
rigid, mutually-exclusive manner one would expect if the
patentee intended “short” paths to be limited to some abso-
lute maximum distance. As our dissenting colleague cor-
rectly notes, the specification also uses the term “shorter”
in the same sentence as “short,” as follows: “a shorter range
communication path (such as a short range Bluetooth®
path).” Diss. Op. at 4-6 (quoting J.A. 262 at 169:64-65);
J.A. 261 at 167:62-63 (“[A] shorter range communication
path (e.g., a Bluetooth® formatted short range path).”); see
also J.A. 178 at 2:64-67 (describing invention as one “where
the ID node is operative to communicate with the mobile
master node over a second communication path (such as a
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shorter range path, like Bluetooth® or NFC”) (emphasis
added); J.A. 256 at 158:36-38 (contrasting “a first (e.g.,
longer range) communication path and . . . a second (e.g.,
shorter range) communication path). It is true that, as a
general matter, different terms in a patent are presumed
to carry different meanings. See generally Helmsderfer v.
Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1382 (Fed.
Cir. 2008). But it is similarly true that “the mere use of
different words” does not, by itself, establish a “materially”
different claim scope where the claims “use slightly differ-
ent language to describe substantially the same invention.”
Ohio Willow Wood Co. v. Alps S., LLC, 735 F.3d 1333, 1342
(Fed. Cir. 2013). Here, in at least two instances, the ’231
patent treats a “short range” path as an example of a
“shorter range” path, indicating the patentee used those
terms, at least at times, interchangeably.
Moreover, in other places the specification collapses
“medium” and “long” paths into, simply, “medium/long,”
implying that “medium” paths are not materially distinct
from “long” ones. See J.A. 57 at Figure 4; J.A. 58 at Figure
5; J.A. 166 at Figure 95; J.A. 210 at 65:31 (“medium/long
range”); J.A. 234 at 114:56 (same); J.A. 271 at 167:60
(same); J.A. 205 at 55:55-58 (“Master node 110a is typi-
cally connected . . . via longer-range wireless communica-
tion . . . and/or medium range wireless communication.”).
The specification likewise pairs “long” with “longer” in a
way that mirrors its treatment of “short” and “shorter.” See
J.A. 190 at 26:40-48 (“[E]xemplary master node 110a in-
cludes a medium and/or long-range communication inter-
face . . . [which] may be implemented with a longer range
radio.”) (emphasis added). We do not suggest that this
specification is a model of clarity, but we believe if the pa-
tentee intended “short,” “medium,” and “longer” (or even
any one of them) to be strictly demarcated categories, one
would expect the specification to say so more clearly. See
Hill-Rom Servs. v. Stryker Corp., 755 F.3d 1367, 1372
(Fed. Cir. 2014) (“[T]he claims of the patent will not be
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read restrictively unless the patentee has demonstrated a
clear intention to limit the claim scope using words or ex-
pressions of manifest exclusion or restriction.”) (internal
quotation marks omitted).
The remainder of the intrinsic evidence provides still
further support for the Board’s construction, defining
“short” by its comparative relationship to “longer.” The
specification explicitly and repeatedly describes how “mes-
sage[s] . . . [are] formatted for the longer range communi-
cation path (such as a longer range WiFi path) when
compared to a shorter range communication path (such as
a short range Bluetooth® path).” J.A. 262 at 169:61-66
(emphasis added); see also J.A. 253 at 152:53-57 (“[T]he
communication path for the master node . . . is a . . . longer-
range communication path when compared to the short-
range communication path.”) (emphasis added); J.A. 263 at
171:4-7 (“The message may . . . be formatted for a longer
range communication path when compared to a shorter
range communication path used to communicate between
the ID nodes.”) (emphasis added); J.A. 380 at 406:32-35
(same). Hence, we conclude that a person of ordinary skill
in the art would understand from the specification’s ap-
proach to describing varying lengths of communication
paths that a path, such as a WLAN path, could meet the
claim’s requirement of a “short” path so long as it is shorter
than the claim’s “longer” path.
The Board found that the extrinsic evidence also sup-
ported its construction. See J.A. 40 (citing J.A. 3708-09 and
FedEx expert testifying that “what qualifies as short range
or long range depends on the particular context . . . . It’s a
relative term. There’s no dictionary definition of a physical
distance limit on what qualifies something as short or not
which means the term becomes relative in the context of
how it’s used.”). Because the intrinsic evidence fully re-
solves this claim construction dispute, we need not review
the Board’s assessment of the extrinsic evidence. See
Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1583
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(Fed. Cir. 1996) (“In most situations, an analysis of the in-
trinsic evidence alone will resolve any ambiguity in a dis-
puted claim term. In such circumstances, it is improper to
rely on extrinsic evidence.”).
FedEx’s arguments for its construction, which would
exclude WLAN paths from providing the “short range com-
munication path,” are unavailing. FedEx principally in-
sists that “[b]y categorizing WLAN as ‘medium range,’ the
patent excludes it from the scope of ‘short range.’” Open.
Br. at 47 (quoting J.A. 183 at 11:53-59); see also J.A. 1211
(FedEx arguing to Board that “[w]hatever ‘short-range’
means in the abstract, the specification explicitly excludes
‘WLAN’ from its scope”). FedEx’s contention is based on a
single sentence from the specification, which reads: “Mas-
ter node 110a is typically connected to server 100 through
network 105 via . . . medium range wireless communication
(e.g., wireless local area data networks [WLAN] or Wi-Fi).”
J.A. 183 at 11:55-59 (emphasis added). Given that the per-
tinent claim language is “short” and “longer,” this one sen-
tence – which expressly calls out WLAN and Wi-Fi as
“typical” examples of medium range communications – con-
stitutes neither lexicography nor a clear and unmistakable
disclaimer of WLAN as potentially being, in some embodi-
ments of the claim, a “short range communication path.”
Id.; see also Thorner v. Sony Comp. Entm’t Am. LLC,
669 F.3d 1362, 1366-68 (Fed. Cir. 2012) (“The standard for
disavowal of claim scope is . . . exacting. . . . [D]isclosing
embodiments that all use the term the same way is not suf-
ficient to redefine a claim term.”); Teleflex, Inc. v. Ficosa N.
Am. Corp., 299 F.3d 1313, 1325 (Fed. Cir. 2002) (“The pa-
tentee may demonstrate an intent to deviate from the ordi-
nary and accustomed meaning of a claim term by including
in the specification expressions of manifest exclusion or re-
striction, representing a clear disavowal of claim scope.”).
We are persuaded that, in the full context of the claim lan-
guage and the specification, a person of ordinary skill
would understand this one reference to WLAN as “medium
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range” as an exemplary embodiment, one in which some
other type of path (in this embodiment, “Bluetooth® for-
matted communications”) meets the “short range” limita-
tion (because it is shorter than WLAN) and yet another
type of message (in this same embodiment, “cellular”)
meets the “longer range” limitation. Such an artisan would
not take this sentence to mean that the only role a WLAN
communication path can play in all embodiments of the
claims is as a “medium” or “longer range” path.
Thus, we agree with the Board that the correct con-
struction of “short range communication path” is broad
enough to encompass communication paths that are
shorter than the claimed “longer range communication
path.” A WLAN path, then, may, in some claimed embodi-
ments, be shorter than a longer communication path used
in that same embodiment. One such embodiment is taught
in Benson, which uses a WLAN path as well as a satellite
relay path, where the latter is undisputedly longer than the
WLAN path, leading a skilled artisan to understand that
(in that embodiment) the WLAN is the “short” range path.
B
Claim 26 further requires that the ID nodes “be[] oper-
ative to communicate with the mobile master node . . . but
unable to directly communicate with the server.” J.A. 386
at 418:39-42. FedEx argued to the Board that this claim
limitation is satisfied only by “a device that lacks the phys-
ical capability to communicate directly with the server”
and, thus, can never be configured to enable such commu-
nications. J.A. 10, 1045. FedEx additionally argued that
“[a] device physically capable of communicating with a
server, but refraining from doing so for certain functions,
during certain times, or through programmatic disabling,
does not meet this test,” because such a device could on oc-
casion be configured to enable such communications. J.A.
1045; see also J.A. 1050 (FedEx arguing key is that device
“lack[s] the physical capability (e.g., circuitry)” and Benson
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teaches the opposite” of “a remote sensor physically inca-
pable of communicating” because “the circuitry for Benson’s
remote and master units is identical”) (emphasis added).
The Board rejected this proposed construction as unsup-
ported by the intrinsic evidence. It read the specification
to disclose embodiments in which the only factor control-
ling whether a certain device is described as “unable to”
communicate is its current programming, not its physical
capabilities. See J.A. 12. The Board identified two embod-
iments of smartphone 200 that are both “‘unable’ and ‘not
operative to’ communicate with a server when [] not pres-
ently configured that way through software” – even though
the same physical device could be reprogrammed to enable
such communication. Id. (discussing J.A. 232 at 110:13-
19). The Board further found no intrinsic evidentiary sup-
port for FedEx’s argument that there is a “meaningful dif-
ference” between “not operative to,” as used in claim 1, and
“unable to,” as used in claim 26. J.A. 12.
We again agree with the Board. The claim language
“not operative to” is broad enough to encompass devices
that are physically incapable of direct server communica-
tion as well as devices that are presently unable to do so
but could be reprogrammed to enable such communication.
FedEx’s construction would improperly import a “perma-
nent physical incapacity” limitation into the claim. The
plain and ordinary meaning of “unable to” is broader than
just permanent lack of physical capability, and one of ordi-
nary skill in the art would not read the specification as nar-
rowing the term to only such embodiments. To the
contrary, as the Board observed, the specification discusses
an embodiment of smartphone 200 that is described as “not
operative to” communicate with a server in one configura-
tion, even though different programming seemingly could
configure that same device to be able to communicate with
a server. J.A. 12. As the Board persuasively observed, the
claims and specification use “not operative to” and “unable
to” as having the same meaning.
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Under the Board’s correct construction, it is undis-
puted that Benson’s disclosure of remote sensor units that
do “not communicat[e] with the central data collection
server directly” renders obvious claim 26’s “unable to” lim-
itation, even though Benson’s embodiments could be pro-
grammed to communicate directly with a central server.
J.A. 42-43 (internal quotation marks omitted). Thus, our
affirmance of the Board’s constructions – of “short range
communication path” and “not operative to” – compels us
to affirm the Board’s conclusion that Qualcomm proved
claim 26 unpatentable as obvious.
C
Claims 9 and 23-25 require a “power management in-
struction . . . causing the mobile master node to alter [(1)]
at least one operation of the mobile master node and . . .
[(2)] at least one operation of the ID node.” J.A. 385 at
416:40-47; J.A. 386 at 418:13-29. FedEx argued to the
Board that “a single ‘power management instruction’ must
cause the mobile master node to alter at least one operation
of both the mobile master node and the ID node, and that
Qualcomm ha[d] not shown that either one of its two al-
leged instructions has that effect.” J.A. 45. We agree with
FedEx that the Board’s failure even to address this argu-
ment means it acted arbitrarily, capriciously, or otherwise
not in accordance with law.
Under the APA, “the Board is obligated to articulate a
satisfactory explanation for its action including a rational
connection between the facts found and the choice made.”
Alacritech, Inc. v. Intel Corp., 966 F.3d 1367, 1373 (Fed.
Cir. 2020) (internal quotation marks omitted). The Board
failed to address FedEx’s argument that claims 9 and 23-
25 require the same “power management instruction” to
cause a mobile master node to alter both an “operation of
the mobile master node” and “an operation of the ID node.”
Instead, the Board found this limitation taught by Ben-
son’s disclosures of an “activation request” and, separately,
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of a “task management script.” J.A. 45-47. But the Board
did not assess whether either Benson’s activation request
or task management script altered both the mobile master
node and the ID node. Instead, the Board simply noted,
without evaluating, FedEx’s argument that its claims re-
quire altering both nodes simultaneously.
Qualcomm invites us to read the Board’s acknowledg-
ment of FedEx’s argument as adoption of Qualcomm’s po-
sition that the two distinct requests (i.e., the activation
request and the task management script) render the claim
limitation obvious. We cannot, however, “reasonably dis-
cern” the basis for the Board’s rejection of FedEx’s argu-
ment or even whether the Board considered the issue. See
CQV Co., Ltd. v. Merck Pat. GmbH, 130 F.4th 1344, 1349-
50 (Fed. Cir. 2025) (internal quotation marks omitted). We
are not permitted to speculate. See Gechter v. Davidson,
116 F.3d 1454, 1457 (Fed. Cir. 1997) (“Necessary findings
must be expressed with sufficient particularity to enable
our court, without resort to speculation, to understand the
reasoning of the Board.”). Much like the Board analysis we
found lacking in Alacritech, 966 F.3d at 1371, here “the
Board did not endorse, adopt, or otherwise suggest that it
was persuaded by th[e] arguments” made by Qualcomm –
i.e., that a single instruction resulting in both alterations
was not necessary or that one of the two instructions dis-
closed in Benson actually results in both alterations. Thus,
“we cannot infer . . . that the Board necessarily adopted
[Qualcomm’s] position.” Id. at 1372.
Therefore, we “vacate the Board’s obviousness determi-
nation as to claims [9 and 23-25] and remand for the Board
to reconsider whether the asserted prior art teaches or sug-
gests” the “power management instruction” limitation, af-
ter evaluating (and explaining its analysis of) FedEx’s
argument that the limitation requires alterations to both
the mobile master node and ID nodes be achieved by a sin-
gle instruction. Id. at 1373.
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D
Regarding the “power management instruction” limita-
tion of claims 9 and 23-25, FedEx additionally argues that
the Board erred in finding that Benson’s activation request
alters an operation of the mobile master node. The parties
agree that Benson does not explicitly state what causes the
master unit to exit its hibernation state. We review the
Board’s findings as to what the prior art teaches for sub-
stantial evidence. See In re Mouttet, 686 F.3d 1322, 1334
(Fed. Cir. 2012).
Substantial evidence supports the Board’s finding.
Benson’s Figure 4, reproduced below, depicts how, if no ac-
tivation request is received from a server, the system re-
turns to its hibernation state.
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J.A. 2999. The Board found that this figure “appear[s] to
indicate that [the activation request’s] purpose is to re-
quest activation by the master unit.” J.A. 46. The Board
further credited Qualcomm’s expert’s testimony “that the
request is what wakes the master unit from its hiberna-
tion” and was unpersuaded by FedEx’s expert’s opinion
that “the master unit wakes of its own volition.” Id. To-
gether, Benson’s Figure 4 and Qualcomm’s expert’s testi-
mony could persuade a reasonable factfinder that Benson’s
activation request awakens its master unit from hiberna-
tion and, therefore, causes an alteration of Benson’s “mo-
bile master node.” Accordingly, substantial evidence
supports the Board’s finding that Benson discloses the
“power management instruction” of claims 9 and 23-25.
Therefore, this finding may not be disputed on remand.
IV
We have considered the parties’ remaining arguments
and find them without merit. Accordingly, the final writ-
ten decision of the Board is vacated and remanded as to
claims 9 and 23-25 and affirmed as to claim 26.
AFFIRMED-IN-PART, VACATED-IN-PART, AND
REMANDED-IN-PART
COSTS
Each party to bear its own costs.
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N OTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
FEDERAL EXPRESS CORPORATION,
Appellant
v.
QUALCOMM INCORPORATED,
Appellee
JOHN A. SQUIRES, UNDER SECRETARY OF
COMMERCE FOR INTELLECTUAL PROPERTY
AND DIRECTOR OF THE UNITED STATES
PATENT AND TRADEMARK OFFICE,
Intervenor
______________________
2024-1237
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2022-
00586.
______________________
CUNNINGHAM , Circuit Judge, concurring-in-part and dis-
senting-in-part.
I agree with the majority that (1) the part of FedEx’s
appeal regarding whether Qualcomm was required, under
35 U.S.C. § 312(a)(2), to name Roambee as a real party in
interest should be rejected, Maj. Op. at 3 n.1; (2) the Board
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correctly construed “unable to,” id. at 11–13; (3) the Board
failed to address FedEx’s argument that claim 9 and claims
23–25 require the same “power management instruction”
to cause a mobile master node to alter both an “operation
of the mobile master node” and “an operation of the ID
node,” id. at 13–14; and (4) substantial evidence supports
the Board’s finding that Benson’s activation request alters
an operation of the mobile master node, id. at 15–16. I
write separately because in my view the Board erred by
construing a “short range communication path” to mean
any communication path, “so long as the ‘longer range com-
munication path’ is, in fact, ‘longer.’” J.A. 41; cf. Maj. Op.
at 6–11.
As always, I start with the claim language. “Short”
does not mean “shorter.” A six-hour tennis match is not
“short” because one tennis match has lasted longer and
concluded after eleven hours. Someone running her first
marathon is not going for a “short” run merely because
“longer” ultramarathons exist. And a half-court basketball
shot is not “short range,” despite a full-court shot being
“longer range.” Instead, what these examples reveal is that
“short” is a “positive adjective,” that “simply expresses an
object’s quality without reference to any other thing.” The
Chicago Manual of Style ¶ 5.85 (15th ed. 2003); see also
Maj. Op. at 7 (noting that “long” is a “positive degree adjec-
tive”). Positive adjectives contrast with “comparative ad-
jective[s],” which “express[ ] the relationship between two
things in terms of a specified quality they share.” The Chi-
cago Manual of Style ¶ 5.86 (15th ed. 2003); see also Rod-
ney Huddleston & Geoffrey K. Pullum, The Cambridge
Grammar of the English Language, 1122–23 (2002) (distin-
guishing the “plain” form of an adjective such as “tall” from
the “comparative” form such as “taller”). This distinction
matters because whereas comparative adjectives do not im-
part information about the object itself, positive adjectives
like “short” do. The sentence stating that “John is taller
than Mary” does not imply that either John or Mary is tall.
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See Renate Bartsch, The Grammar of Relative Adjectives
and Comparison, in Formal Aspects of Cognitive Processes
168, 168–70 (1975). Thus, the majority’s emphasis on its
assertion that “longer” is a comparative term is misplaced.
Maj. Op. at 7. Even accepting the majority’s contention
that “longer” is a comparative term, “short” remains a pos-
itive adjective with “external fixed standards.” Id. To hold
otherwise would violate the claim construction principle
that “[a] claim construction that gives meaning to all the
terms of the claim is preferred over one that does not do
so.” Lashify, Inc. v. Int’l Trade Comm’n, 130 F.4th 948, 964
(Fed. Cir. 2025) (alteration in original) (quoting Merck &
Co v. Teva Pharms. USA, Inc., 395 F.3d 1364, 1372
(Fed. Cir. 2005)). Instead, I would conclude that the plain
and ordinary meaning of “short” and a comparative
“longer,” when used in conjunction, is that one item must
be “longer” than the other item, which must independently
be “short.”
In support of its conclusion that “short” is a compara-
tive adjective, the majority emphasizes that “the claim lim-
itations are ‘short’ and ‘longer,’ not ‘short’ and ‘long.’” Maj.
Op. at 7. True, but the claim limitations are also not
“shorter” and “longer.” Cf. id. at 11 (“[T]he correct con-
struction of ‘short range communication path’ is broad
enough to encompass communication paths that are
shorter than the claimed ‘longer range communication
path.’”). The majority recognizes that the plain meaning of
“long” is that it is “a positive degree adjective” but does not
explain why the same would not apply to “short.” Id. at 7.
Indeed, under the majority’s construction of “short,” a long
range communication path can be “short range,” provided
that it is shorter range than the “longer range communica-
tion path.” See id. I would reject a construction that de-
fines a “short range communication path” to encompass a
long range communication path. Instead, in my view,
claim 26 of the ’231 patent requires that a first communi-
cation path be “short range,” without defining a precise
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range, and requires that a second communication path be
“longer range” than the first path. That second communi-
cation path could be long range, medium range, or, in many
cases, “short range,” so long as it is still “longer range” than
the first communication path. By contrast, I would con-
clude that the first, “short range” communication path
could only be “short range.”
The specification confirms that “short” is a positive, not
a comparative adjective.1 The specification discloses an
embodiment where a master node has a “short-range ra-
dio . . . used for communicating with other nodes” and a
“medium and/or long-range radio for communication with
the server.” ’231 patent col. 13 ll. 20–25. In this embodi-
ment, either the medium or long-range radio would have a
longer range than the “short-range” radio. Thus, it stands
to reason that by claiming a “short range” communication
path and a “longer range” communication path, claim 26 of
the ’231 patent covers a “short range” path and either a
“medium range” or a “long range” path. Similarly, the spec-
ification discloses an embodiment where a “first communi-
cation interface” communicates with “the mobile user
device operating as an advertising ID node over a short-
range communication path, such as over a Bluetooth® Low
1 I do not think this case is a lexicography or disa-
vowal case. Cf. Maj. Op. at 10–11; J.A. 40–41. Instead, I
think the plain and ordinary meaning of “short” not being
shorter is supported by the patent’s consistent usage of
“short” as a positive, rather than a comparative, adjective.
See Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir.
2005) (en banc) (“[C]laims must be construed so as to be
consistent with the specification, of which they are a part.”
(quotation marks and citation omitted)); Hologic, Inc.
v. SenoRx, Inc., 639 F.3d 1329, 1338 (Fed. Cir. 2011) (de-
scribing “consistent[ ] and exclusive[ ]” use of a term in the
specification as supporting a construction).
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Energy formatted signal communication path” while a “sec-
ond communication interface” uses a “wireless higher-
speed, longer-range communication path when compared
to the short-range communication path of the first commu-
nication interface.” ’231 patent col. 152 ll. 45–57. In other
words, the “short-range communication path” must be
“short range” like a Bluetooth® Low Energy communica-
tion path, while the “longer-range communication path” is
“longer-range . . . when compared to the short-range com-
munication path.” Id. col. 152 ll. 55–57. Meanwhile, there
is no embodiment where “short range” is used to refer to a
medium or long range communication path, or where
“short” is used as purely comparative. “Short” is consist-
ently used as a positive adjective.
On the other hand, when the specification states that
one communication path is “shorter” than another commu-
nication path, it uses the comparative adjective “shorter.”
The majority’s own examples prove the point. See Maj. Op.
at 9 (highlighting a “longer range communication path
when compared to a shorter range communication path.”
(emphasis omitted) (quoting ’231 patent col. 171 ll. 4–7)).
More particularly, the specification includes an example of
a message being “formatted for the longer range communi-
cation path . . . when compared to a shorter range commu-
nication path (such as a short range Bluetooth® path).”
’231 patent col. 169 ll. 61–66; see Maj. Op. at 9. In this ex-
ample, “shorter range” is used as a comparative adjective,
while “short range” is used a positive adjective, with Blue-
tooth® given as a specific example of a “short range” com-
munication path that is “shorter range” than a “longer
range communication path.” In my view, this example is
an instance where “a ‘short range’ path [i]s an example of
a ‘shorter range’ path,” rather than a case of “the patentee
us[ing] those terms, at least at times, interchangeably.”
Maj. Op. at 8. The specification indicates that there are
multiple ranges that could be “shorter range” than the
“longer range” communication path (e.g. a short range or a
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medium range communication path), with “short range”
being one such type. Accordingly, by claiming a “short
range” communication path, claim 26 is limited to a specif-
ically “short range” path.
Lastly, the majority contends that because “the specifi-
cation collapses ‘medium’ and ‘long’ paths into, simply, ‘me-
dium/long,’” it implies that “‘medium’ paths are not
materially distinct from ‘long’ ones.” Id. at 8. There are
three problems with the majority’s analysis on this point.
First, the specification does not collapse “medium” and
“long” range paths. Instead, it merely says that in some
embodiments, either a medium or a long range path could
be used as a path that is longer than a short range path.
See id. at 8–9 (collecting examples of the specification stat-
ing “medium/long” or “medium and/or long”). The majority
does not identify any type of communication path that is
referred to in some places as “medium range” and in some
places as “long range.” Second, even if “medium” and “long”
were interchangeable, it would say nothing about “short.”
I agree with the majority that either a “medium” or a “long”
range communication path is “longer range” than a “short
range communication path,” but that does not mean that
“short range” can include long range communication paths.
Third, even if the categories of short, medium, and long
were fungible, it does not follow that “short” is a compara-
tive adjective. The majority does not explain why some
overlap between categories of communication paths sup-
ports the Board’s broader construction that “short range
communication path” means any communication path, so
long as there is a “longer range” communication path that
is longer. See J.A. 41; Maj. Op. at 6–11. Because claim 26
refers to “short range,” not shorter range, I would conclude
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that it requires a “short range communication path” rather
than a shorter range communication path.2
In my view, once a person of ordinary skill in the art
determined that “short range” was a positive adjective, ra-
ther than a comparative adjective, he or she would look to
the specification for context and to define the limits of
“short range.” The ’231 patent gives a few examples of
methods of short range communication: “Bluetooth®,”
“Bluetooth® Low Energy,” “ultra-wide-band impulse radio
communications, ZigBee protocols, [and] IEEE 802.15.4
standard communication.” ’231 patent col 11. ll. 54–55; id.
col. 26 ll. 15–24. Meanwhile, the specification provides ex-
amples of medium range and long range wireless commu-
nication, such as “[WLAN] or Wi-Fi,” “IEEE 802.11g,” and
“cellular radio.” Id. col. 11 ll. 55–60, col. 26 ll. 40–62. In-
deed, Qualcomm does not present any serious argument
that WLAN is a “short range” communication path if
“short” is not a comparative adjective.3 See Appellee’s
Br. 29–41. In my view, a person of ordinary skill in the art
2 I agree with the majority that the intrinsic evi-
dence fully resolves this claim construction dispute without
the need to resort to the extrinsic evidence. Maj. Op.
at 9–10 (citing Vitronics Corp. v. Conceptronic, Inc.,
90 F.3d 1576, 1583 (Fed. Cir. 1996)). To the extent that
Qualcomm contends that FedEx’s expert conceded that
short range is a “relative term[ ]” Appellee’s Br. 32, he was
merely explaining that “short” has no “physical distance
limit” and that the “particular context” of the patent was
necessary. J.A. 3895.
3 The Board concluded that “Lau (via its provisional)
already discloses the use of Bluetooth for communication
between tracking objects and a nearby position-computing
device.” J.A. 41. As Qualcomm concedes, it never made
this argument, and the Board erred by reaching it. Appel-
lee’s Br. 41 n.10.
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would conclude that “a short range communication path”
does not include WLAN, which is instead described as a
medium range communication path. See ’231 patent col 11
ll. 55–60. Accordingly, I would conclude that the Board
erred by holding that Benson discloses a “short range com-
munication path,” J.A. 39–42, and I would reverse as to
claims 26–30. I respectfully dissent.
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